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These articles are for informational purposes, and are not intended to constitute legal advice. These articles are only the opinion of the authors and are not attributable to Muncy, Geissler, Olds & Lowe, P.C., or the firm’s clients.
BRUCE SAFFRAN v. JOHNSON & JOHNSON (Fed. Cir. 2013) (P) – Prosecution history estoppel & means-plus-function structure breadth
(1) In terms of prosecution history estoppel, although a prosecution disclaimer requires “clear and unambiguous disavowal of claim scope,” the court has recognized that “applicants rarely submit affirmative disclaimers along the lines of ‘I hereby disclaim the...
BERISH RUBIN v. GENERAL HOSPITAL CORPORATION (Fed. Cir. 2013) (NP) – Correction of inventorship
Correction of inventorship under 35 U.S.C. § 256 is not available without a collaborative relationship among the potential inventors, which therefore cannot be joint or substitute inventors under the requirements of 35 U.S.C. § 116 for joint invention. In these...
POWER INTEGRATIONS, INC. v. FAIRCHILD SEMICONDUCTOR INTERNATIONAL, INC. (Fed. Cir. 2013) (P) – Invoking means plus function
Use of the word “circuit” generally connotes structure and avoids a usually undesirable means-plus-function construction, especially when accompanied by adjectival qualification or functional language describing its operation (e.g., a “soft start” circuit that...
DAWSON v. DAWSON AND BOWMAN (Fed. Cir. 2013) (P) – Conception
A “preliminary” statement about a “possibility” or “potential use,” alongside a recommendation for continued work and a “report back” in the future, falls short of a “‘definite and permanent idea of the complete and operative invention, as it is hereafter to be...
ANVIK CORPORATION v. NIKON PRECISION, INC. (Fed. Cir. 2013) (NP) – Best mode
First and foremost, the AIA statutory amendment that removed best mode from the list of invalidating conditions for issued patents was not given retroactive effect for cases that were filed before the new statute was enacted. Second, the question of whether the best...
BASF AGRO v. MAKHTESHIM AGAN (Fed. Cir. 2013) (NP) – Prosecution history estoppel
An express disclaimer during prosecution prevents a patentee from “attempting to recapture disclaimed subject matter by isolating and selecting individual components of the accused” product. While the result may have seemed fair in this particular case, the court’s...
ABBOTT LABORATORIES v. CORDIS CORPORATION (Fed. Cir. 2013) (P) – Inter partes reexamination
Although somewhat of a moot point going forward in view of the new statutory provisions for inter partes review in the AIA, for the old inter partes reexamination proceedings a district court may not issue a subpoena pursuant to 35 U.S.C. § 24 to compel discovery...
FROLOW v. WILSON SPORTING GOODS CO. (Fed. Cir. 2013) (P) – Marking estoppel
Marking a product with a patent number is circumstantial evidence (in the form of any other “extrajudicial admission”) that weighs in favor of finding infringement, but true “marking estoppel” does not apply. The accused infringer is free to introduce counter evidence...
ARISTOCRAT TECH v. INTL GAME TECH (Fed. Cir. 2013) (P) – Vicarious liability for direct infringement
Vicarious liability for direct infringement is generally limited to the scenario in which one party’s direction or control over another takes the form of a principal-agent or similar contractual relationship. “[A]bsent that agency relationship or joint enterprise, we...
SYNQOR v. ARTESYN TECH (Fed. Cir. 2013) (P) – Enhanced damages
Post-infringement-verdict sales point to a high likelihood that enhanced damages will be awarded sua sponte, regardless of whether pre-verdict willfulness has been pled. Background / Facts: The patents at issue involve converters with separate “isolation” and...